Appeal 2007-1888
Application 10/258,067
fall within the compositions encompassed by claims 1 and 11 and the
methods of applying such compositions disclosed by Jones fall within the
methods encompassed by claims 1 and 11.
Indeed, contrary to Appellants’ contentions, one of ordinary skill in
this art would have recognized that Nguyen’s compositions can be used in
Jones’ methods in view of the commonality of ingredients between
Nguyen’s compositions and the compositions used by Jones to illustrate the
methods disclosed, and the methods of both references apply heat to the
treated textile subsequent to treatment. Thus, as the Examiner contends, this
person would have been motivated to combine Nguyen and Jones leading to
the application of Nguyen’s compositions to textiles via Jones’ methods to
obtain the benefits conferred by the process when using such compositions.
Accordingly, one of ordinary skill in this art routinely following the
combined teachings of Nguyen and Jones would have reasonably arrived at
the claimed methods and products encompassed by claims 1 and 11,
including all of the limitations thereof arranged as required therein, without
recourse to Appellants’ specification. See, e.g., In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent
criterion for determination of obviousness is whether the prior art would
have suggested to one of ordinary skill in the art that [the claimed process]
should be carried out and would have a reasonable likelihood of success,
viewed in light of the prior art.” (citations omitted)); In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981) (“The test for obviousness is
not whether . . . the claimed invention must be expressly suggested in any
one or all of the references. Rather, the test is what the combined teachings
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